Susan Finder’s estimable Supreme People’s Court Monitor wrote yesterday about a fascinating Donald Trump trademark matter in China.
Back in December 7, 2006, Trump filed a China trademark application for the word mark “TRUMP” in Class 37, covering services such as building construction, repair, and installation services. Unfortunately for Trump, on November 24, 2006, an individual named Dong Wei (董伟) had filed his own application for “TRUMP” in class 37 covering services such as building construction supervision, construction, demolition, road building, mining, and drilling.
Trump’s application was rejected by the Chinese Trademark Office (CTMO) with respect to the goods similar to those on Dong Wei’s application. Trump then appealed to the Trademark Review and Adjudication Board (TRAB) and lost. He then appealed to the Beijing Intermediate People’s Court and lost again. He then appealed to the Beijing Higher People’s Court, and in May 2015 he lost yet again. Having exhausted his options in court, Trump made a decision familiar to fans of reality television: he fired his trademark attorneys.
Though Trump’s attorneys had contended that “TRUMP” was a well-known mark, the Beijing Higher People’s Court did not even address this argument. It was a simple decision based on a simple principle: Dong Wei filed his application first, and Dong Wei’s trademark was still valid.
But that’s not the end of the story. At the same time as he appealed the rejection of his application, Trump pursued a parallel strategy seeking to invalidate Dong Wei’s trademark. As soon as Dong Wei’s trademark application was published in the Trademark Gazette, Trump filed an opposition. That opposition was rejected. Trump then filed an appeal to the rejection of his opposition. That appeal was denied by the TRAB in April 2015. (It appears likely that the Beijing Higher People’s Court was waiting for the results of this appeal before issuing their decision.)
At this point, Trump had two main options if he still wanted to contest Dong Wei’s mark. He could appeal the TRAB’s decision (with regard to his opposition to Dong Wei’s mark) to the Beijing IP Court. Or he could accept the results of the TRAB’s decision, let Dong Wei’s mark proceed to registration, and then attempt to invalidate Dong Wei’s registered trademark. Trump went with the latter option, which is an odd choice because he would be making the same arguments before the same appellate board.
And then something surprising happened. The TRAB ruled in Trump’s favor, and invalidated Dong Wei’s mark with respect to everything but mining and drilling. The invalidation decision is not publicly available, so we can only extrapolate from the few facts that are known. The TRAB published its invalidation result in September 2016, which means that the decision itself was probably made in June or July 2016. Trump was apparently able to show, at long last, that “TRUMP” was a well-known mark, but only with respect to the more standard real estate and construction services. Why now? Was Trump able to provide new evidence showing that the “TRUMP” name was well-known in 2006? Without knowing more, this decision seems at odds with the usual standards regarding well-known marks in China. It is hard to escape the feeling that the media attention given to Trump in China over the past few months affected the TRAB’s decision.
Hedging his bets even further, Trump had filed a new, separate trademark application in 2014 for similar services as those covered in Dong Wei’s mark. This 2014 application effectively took the place of Trump’s 2006 application. (Trump’s attorneys presumably thought — correctly — that the 2006 application might be rejected before the invalidation proceeding for Dong Wei’s mark was complete, and wanted to have another trademark ready to go.) Now, with Dong Wei’s mark invalidated, Trump’s new mark has been published in the Trademark Gazette. Unless someone files an opposition, the mark will proceed to registration in 3 months.
It would have been a different situation if Dong Wei filed his application today. First, Trump is undeniably well-known in China. Second, China has an informal rule against registering the names of American presidents as trademarks: a quick review of the CTMO database indicates that applications for 克林顿 (the official Chinese translation of “Clinton”), Clinton, Obama, 奥巴马 (the official Chinese translation of “Obama”), and even 希拉里 (the official Chinese translation of “Hillary”) have been routinely rejected by the CTMO. The difference with Trump is that he was a businessman for years before turning to politics.
As Mark Cohen’s China IPR blog has pointed out, Dong Wei is hardly the only person in China to file TRUMP-related trademark applications in China. A quick CTMO search reveals dozens of applications for “TRUMP,” “TRUMP TOWER,” “TRUMP PLAZA,” and so forth, as well as innumerable Chinese variations. Some of those have been filed by Donald Trump himself, but he’s fighting a rearguard action. If he cared about protecting his name – and his willingness to litigate over these issues shows that he does – he should have taken the Starbucks approach and filed applications in every class covering every subclass. Maybe he’ll do that now.
It will be interesting to see what the CTMO and TRAB do with subsequent oppositions and invalidation proceedings brought by Trump. I can only assume such proceedings will be legion. Even if most (or all) of the third-party “TRUMP” trademarks are invalidated due to Trump’s status as the president-elect, think of all the time, effort, and money that Trump expended to get this far.
Once again, the moral of this China trademark story is: register your trademark now, before someone else does it for you. Unless you plan on being elected President of the United States.This article was written by Matthew Dresden and published on China Law Blog. Original Post: http://www.chinalawblog.com/2016/11/china-ip-protection-the-trump-issue.html